TM abbreviation/nickname

[Silverwire]

Let's assume (just for a second as an example) that "Cadillac" is the registered trademark of a brand new automobile model. So new, that only a few people have started calling it a "Caddy". And no where has the term "Caddy" been heard to come directly from the company, but it may have.

I would assume that over time, as the mark is more widely recognized by the abbreviation or nickname, then they too will become protected as a trademark.

However, if a domain name that includes the abbrev/nickname is registered during this early period, all other things equal, is it safer for the dn owner to use "CaddyRepair.com" rather than "CadillacRepair.com"

EDIT: I wrote this fighting to keep awake last night. I think a better description of my question is a case when a short form use of the trademark term is used, by merely dropping syllables off the trademark term. Just still can't think of any good examples.

In fact, the more I think about it, I’m expecting an answer like “it depends”, and even then I'm thnking I can guess the answer, but any general facts about this would be appreciated

 

[jberryhilljberryhill is verified member.]

"Just still can't think of any good examples."

Sometimes the company will adopt the nickname that gains public currency...

McDee's or Mickey Dee's for McDonalds.

Bug for Volkswagen Beetle.

Bud for Budweiser.

Coke for Coca-Cola.

This is the setup for one of the funniest UDRP cases:

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0383.html
The domain name in issue is <crappytire.com>.
[...]
Complainant submits that Canadian Tire is also colloquially referred to or known as "Crappy Tire". The term "Crappy Tire" is a slang expression derived from the Canadian Tire trade marks.



Yeah pal, sure. You get the idea that the Complainant in this case was that kid who never quite "got it" when the other kids in school were making fun of him.

 

[fizz]

Very funny case John and I remember when the decision came out last year but hadn't read it in detail. It was indeed a David vs Goliath case: "Canadian Tire’s annual catalogue is distributed to almost nine million households in English and French."

Funny snippets from other cases mentioned in the decision: "... a judge of the Federal Court of Canada found that the plaintiff had established a prima facie case of infringement relating to its "PERRIER" trade marks when the defendant used the words "Pierre Eh!", a reference to the then Prime Minister of Canada."

"Complainant also cites a trade mark opposition, case in which a Hearing Officer found that the proposed trade mark "THE TORONTO SOK EXCHANGE" was not distinctive because it was confusing with the mark "THE TORONTO STOCK EXCHANGE"."

"Complainant further cites the case of Natural Footwear Ltd. et al v. Schwarz, (1986), 12 C.P.R. (3d) 84 (Ont. H.C.) concerning the trade mark "ROOTS" & representation of a beaver. The defendant used the trade mark "ROTS" in association with a parody of a beaver."